WordPress.com parent company Automattic and two WordPress users have sued two defendants who attempted to use American copyright law to remove online speech critical of their actions.

In a pair of lawsuits filed Thursday in the Northern District of California, Automattic cites a provision of the Digital Millennium Copyright Act (DMCA) that requires copyright owners to pay damages when overreaching on copyright claims. However, as we’ve reported before, it’s pretty tough to get damages paid under Section 512(f).

Many have noted (including Ars founder Ken Fisher a decade ago) that the DMCA’s notice-and-takedown provision practically encourages an overzealous response from those who claim copyright ownership. Still, in these new cases involving Automattic, the plaintiffs argue that the defendants are not the actual copyright owners. And under the DMCA, the recipient of the notice is required to quickly take down the alleged offending content before it can investigate whether the claim is legitimate.

Further Reading

Copyright guru and well-known law professor Lawrence Lessig brought a similar suit earlier this year under 512(f). And the Electronic Frontier Foundation is representing the woman behind the famous “dancing baby” YouTube video. Both cases are still pending.

“Unfortunately, the reason why we’re bringing the test cases is that we see these frequently and in increasing number,” Paul Sieminski, the general counsel of Automattic, told Ars. “People are getting more bold in the tactics that we’re seeing.”

He said that his office has fielded “hundreds of DMCA cases per month since the beginning of WordPress.com,” referring to the company that hosts WordPress blogs but does not own the popular open-source platform.

Straight edge

The case begins in July 2013, when Hotham, identifying himself as a journalist, wrote to a British advocacy group called “Straight Pride UK” and asked some questions about the group’s goals and motivations.

A Straight Pride UK press officer named Nick Steiner eventually responded to the query, and Hotham posted some of the answers on his blog. By early August 2013, Steiner e-mailed both Automattic and Hotham with a DMCA takedown notice.

Steiner wrote:

User http://oliverhotham.wordpress.com did not have my permission to reproduce this content on WordPress.com or Twitter account or tweets, no mention of material being published was made in communications” and that “it is of good faith belief that use of the material in the manner complained of here is not authorized by me, the copyright holder, or the law” (the “Misrepresentations”).

A mystery from India

Retraction Watch is a well-known website in the science and science journalism community, which, as the name implies, is focused on retractions and corrections in science and medical journals.

On October 5, 2012, the editors behind Retraction Watch published a blog post involving a scientist named Anil Potti. The site wrote about Potti being the subject of a number of retractions.

But by February 2013, the plaintiffs claim, Chatwal copied 10 posts off Retraction Watch, re-publishing them at NewsBulet.in. That domain was just one letter off from a different, legitimate site, NewsBullet.in. (Later, Potti wrote to Retraction Watch, saying that the DMCA notice was not filed by him or filed on his behalf.)

Chatwal next filed a DMCA notice, claiming, "Recently we found that some one had copied our material from the category Medical Reviews and published them on their site. So we request you to help us in protecting our content and copy right."

While that blog post was later restored once Retraction Watch filed a counter-notification, the site claimed that it “expended staff time and resources in corresponding with Automattic about the Takedown Notice and addressing issues that resulted from the Takedown Notice. Retraction Watch also suffered harm in that its reporting on a matter of legitimate and substantial public concern was silenced, albeit temporarily, as a result of the misrepresentations in the Takedown Notice.”

Dr. Ivan Oransky, a co-founder of Retraction Watch, told Ars that the site has only received the single set of DMCA notices concerning the Potti affair.

"We hope the lawsuit makes it clear to anyone planning to try to use the DMCA to squelch inconvenient news that there can be sanctions for filing false claims," he wrote by e-mail. "Bloggers and others who publish accurate critical journalism shouldn't have to be afraid of being shut down by nonsensical allegations that they've violated someone's copyright."

Good luck with that

Seeing as Steiner and Chatwal are outside the United States—in the United Kingdom and India, respectively—it may be very difficult to actually serve them with the lawsuits, much less collect money from them.

“Practically speaking, [their being abroad] will matter in terms of serving them and getting a judgment against them,” Sieminski, Automattic’s counsel, told Ars.

“It could take a couple of months. It’s not 100 percent clear, but because they sent the notice to the US, we thought we could rely on [federal] law to [respond]. If we do get a judgment, it would be pretty tough to actually collect anything. It isn’t really the point, though—there’s nothing else you can do under current law.”

Automattic cites a provision of the Digital Millennium Copyright Act (DMCA) which requires copyright owners to pay damages when overreaching on copyright claims. However, as we’ve reported before, it’s pretty tough to get damages paid under Section 512(f).

This is the problem. Sure, there may be a provision in the law for recourse in the case of bogus take downs, but what good is it if it's difficult to use legally? The law needs to be changed (in many other ways besides just this).. all it takes is for a few buttons to be clicked and a copyright owner or any imbecile wanting to play a prank can get totally legitimate content taken down. What's worse, the current state of DMCA takedown requests can and has been used as a form of censorship when the copyright owner just plain doesn't like the art, as fair as the use may be.

Until we create disincentives for this type of behavior the system can continue to be abused.

214 posts | registered May 4, 2012

Cyrus Farivar
Cyrus is a Senior Tech Policy Reporter at Ars Technica, and is also a radio producer and author. His latest book, Habeas Data, about the legal cases over the last 50 years that have had an outsized impact on surveillance and privacy law in America, is due out in May 2018 from Melville House. He is based in Oakland, California. Emailcyrus.farivar@arstechnica.com//Twitter@cfarivar

43 Reader Comments

If not, then there need to be some penalties for filing bogus DMCA takedown requests. Penalties with real teeth. If Hollywood wanted a supercharged nuclear takedown weapon, which congress gave them, then it should be required to be used with some responsibility.

Having been forced to file a legitimate DMCA notice myself, it has always worried me just how easy it would be to file a totally false claim. I've been following the Retraction Watch case for a while (first heard of the site thanks to the false DMCA claim), and I'm quite sure it's just the tip of the iceberg. About the only thing worse would be YouTube's automated take-down tool for big media...

Edit: By the way, you have Hotham as both defendant an plaintiff in your text!

The case begins in July 2013, when Hotham, identifying himself as a journalist, wrote to a British advocacy group called “Straight Pride UK” and asked some questions about the group’s goals and motivations.

Automattic cites a provision of the Digital Millennium Copyright Act (DMCA) which requires copyright owners to pay damages when overreaching on copyright claims. However, as we’ve reported before, it’s pretty tough to get damages paid under Section 512(f).

This is the problem. Sure, there may be a provision in the law for recourse in the case of bogus take downs, but what good is it if it's difficult to use legally? The law needs to be changed (in many other ways besides just this).. all it takes is for a few buttons to be clicked and a copyright owner or any imbecile wanting to play a prank can get totally legitimate content taken down. What's worse, the current state of DMCA takedown requests can and has been used as a form of censorship when the copyright owner just plain doesn't like the art, as fair as the use may be.

Until we create disincentives for this type of behavior the system can continue to be abused.

So a thought occurred to me. What happens if you are not a US citizen and live outside the US and some company uses the DMCA to take down some of your content. Can you bring a suit against them in another country or would it have to be in the US?

Say you are from the UK, live in the UK and have a blog with a UK company. Someone in the US (Company A) sends the hosting company a DMCA take down notice and since the hosting company does business world wide the take down the content. Could you then bring a case in the UK against the hosting company / Company A for taking down your content or would you have to go through the US courts?

The case begins in July 2013, when Hotham, identifying himself as a journalist, wrote to a British advocacy group called “Straight Pride UK” and asked some questions about the group’s goals and motivations.

The more I see stories like this (and let's agree there's been more than a few), the more I question *WHY* our tax dollars are being used to address what has traditionally been a civil matter between a copyright owner and an accused infringer. The media cartels screaming "because the interwebz" is sounding more and more ridiculous each time this sort of crap is brought up, and the potential for chilling legitimate speech, as appears to be the case here, argues for more enforcement of the penalties against fake takedowns.

Having been forced to file a legitimate DMCA notice myself, it has always worried me just how easy it would be to file a totally false claim. I've been following the Retraction Watch case for a while (first heard of the site thanks to the false DMCA claim), and I'm quite sure it's just the tip of the iceberg. About the only thing worse would be YouTube's automated take-down tool for big media...

Edit: By the way, you have Hotham as both defendant an plaintiff in your text!

Yeah, I mangled the names originally. Sorry! Just fixed. Should be all clear now.

Automattic cites a provision of the Digital Millennium Copyright Act (DMCA) which requires copyright owners to pay damages when overreaching on copyright claims. However, as we’ve reported before, it’s pretty tough to get damages paid under Section 512(f).

This is the problem. Sure, there may be a provision in the law for recourse in the case of bogus take downs, but what good is it if it's difficult to use legally? The law needs to be changed (in many other ways besides just this).. all it takes is for a few buttons to be clicked and a copyright owner or any imbecile wanting to play a prank can get totally legitimate content taken down. What's worse, the current state of DMCA takedown requests can and has been used as a form of censorship when the copyright owner just plain doesn't like the art, as fair as the use may be.

Until we create disincentives for this type of behavior the system can continue to be abused.

As an owner of a business that does DMCA related actions (we have to enforce them). An interesting thing my lawyers suggested when we were setting up is that to make it as hard as legally allowed to submit DMCAs to reduce the amount of takedowns being issues, and it especially reduces the number of false claims.

The problem is sites like YouTube have special arrangements don't even go with the DMCA, they are their own provisions for "Media Rights Holders" such as major labels which just give them super powers that DMCA doesn't even give them. But then it uses the guise of DMCA as a reason for takedown.

Not saying the DMCA doesn't have problems, but part of the problem is that companies cave in to the big rights holders.

You can't just create fines as there will be claims that were made with all good intentions of thinking it was a DMCA violation and it turns out it isn't one. So you'd have to make it so that innocent false positives aren't punished in a way from scaring away the actual positive reports.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Even if it might be an unpopular opinion, I'm going to say yes.

If we're going to assume a decent amount of money, this would not only throttle bogus takedowns, but also legitimate ones. It means companies with a lot of cash can protect their copyright aggressively, while small companies and individuals can't.

Maybe there could be a solution where a bogus claim, if uncontested, invalidates future claims by that entity (for a period of time). That could solve the problem of foreign entities not being legally reachable, because then it's suddenly in their interest to be reachable.

I think the worst abuse of this that I've seen happened just two months ago when a Russian actress issued a DMCA takedown request on anything that had the first name of the company she was working for.

The company is Persona Stars.

Seeing so many pulled videos, suspended accounts, and the overall fury of people was a hell of a site. She eventually closed her YouTube accout due to the hate but was she punished for her actions? Not really. Just moved on as people complaining now had to wait 2 weeks for their stuff to come back if they filed the claim. Many didn't because to counter notice you need to include real information and the other party could see that

This was a fee months after Sega went after anything Shining Force too. Including material which only mentioned it, a clear and obvious violation. The aftermath of that? Nothing.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Even if it might be an unpopular opinion, I'm going to say yes.

If we're going to assume a decent amount of money, this would not only throttle bogus takedowns, but also legitimate ones. It means companies with a lot of cash can protect their copyright aggressively, while small companies and individuals can't.

Maybe there could be a solution where a bogus claim, if uncontested, invalidates future claims by that entity (for a period of time). That could solve the problem of foreign entities not being legally reachable, because then it's suddenly in their interest to be reachable.

I completely agree with this response. If companies abuse their own legally granted protection, then they no longer deserve it. If they don't, then the DCMA is far less of a problem anyways.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Even if it might be an unpopular opinion, I'm going to say yes.

If we're going to assume a decent amount of money, this would not only throttle bogus takedowns, but also legitimate ones. It means companies with a lot of cash can protect their copyright aggressively, while small companies and individuals can't.

Maybe there could be a solution where a bogus claim, if uncontested, invalidates future claims by that entity (for a period of time). That could solve the problem of foreign entities not being legally reachable, because then it's suddenly in their interest to be reachable.

The problem is that someone hard to reach can basically just make up a new identity.

For escrow, I meant something non-trivial but also not crippling... maybe $1500 for an individual or $5000 for a corporation? Won't stop even a small studio from issuing a legitimate takedown notice, but the costs would pile up fast if one was trying to squelch a news story. Bonding something like this would seem pretty easy.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Even if it might be an unpopular opinion, I'm going to say yes.

If we're going to assume a decent amount of money, this would not only throttle bogus takedowns, but also legitimate ones. It means companies with a lot of cash can protect their copyright aggressively, while small companies and individuals can't.

Maybe there could be a solution where a bogus claim, if uncontested, invalidates future claims by that entity (for a period of time). That could solve the problem of foreign entities not being legally reachable, because then it's suddenly in their interest to be reachable.

The problem is that someone hard to reach can basically just make up a new identity.

For escrow, I meant something non-trivial but also not crippling... maybe $1500 for an individual or $5000 for a corporation? Won't stop even a small studio from issuing a legitimate takedown notice, but the costs would pile up fast if one was trying to squelch a news story. Bonding something like this would seem pretty easy.

$1500 is still an issue. An artist going through financial trouble and has someone stealing their works (thus further harming their profits) would get screwed. They not only have to prove that the DMCA is legit, but they also have to lose availability of cash? It's a very difficult thing to punish abusers because it would also harm those who had all good intentions and lost the DMCA.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

I like the idea in theory, but it sort of breaks down in practice. For large companies, they have plenty of money, so if there's an actual judgement, no problem collecting. For a small author, they may not have anywhere near enough money to do so. Lets say I'm a small artist who notices someone is stealing my music and putting it on their website. I don't want to have to put up a $10,000 deposit just to get rid of the music they stole, because I probably don't have that much money.

DMCA is at least as bad for the general citizenry as patent abuse is to corporations.

We need real copyright reform.

I think the intent of the DMCA over take downs and fraud is in the right place, but I think its implementation is HORRIBLE. We need real teeth for people abusing it. I think it also needs to be written that you can't use a scraper to send notices. A damned human MUST be the one who sends it, they must be required to verify that they have a good faith belief that they own the copyright and I think they also need to CITE the relevant copyright in the notice.

Last I checked, if you want to file suit, you have to acutally file a copyright. Yes, I know you actually hold the rights without having to file if you are the creator, but if you have to actually FILE to instigate litigation, you should HAVE to file a copyright to send a take down notice. They are generally dirt cheap to file (last I checked, something like $20-30 to file), but I bet it would both cut down a little in specious filing of take down notices (in the cases mentioned in the lawsuits here) and it would also cut down on BS claiming of copyright ownership.

It shows bad faith in filing a DMCA take down request if you are citing the wrong copyright, aren't citing a copyright assignment or are citing the wrong copyright and if a human MUST do it, no pretending "oh, it must have been a bug in our code".

My understanding is nobody has ever won damages for an invalid DMCA claim.

You have to _prove_ the invalid claim was deliberately and maliciously written. It's easy to suspect it, but that's not enough. Getting proof is hard.

I thought the DMCA was a great idea, until I discovered how hard it is to get damages for an invalid claim. In my opinion there should be statutory damages for invalid DMCA notices. If you send an invalid notice, you should automatically be liable for tens of thousands of dollars.

Basically if the content *ever* comes back online after you asked it to be taken down, you are guilty of a crime in my opinion. Nobody should be allowed to take other people's content offline unless they're sure it is actually illegal.

DMCA is at least as bad for the general citizenry as patent abuse is to corporations.

We need real copyright reform.

I think the intent of the DMCA over take downs and fraud is in the right place, but I think its implementation is HORRIBLE. We need real teeth for people abusing it. I think it also needs to be written that you can't use a scraper to send notices. A damned human MUST be the one who sends it, they must be required to verify that they have a good faith belief that they own the copyright and I think they also need to CITE the relevant copyright in the notice.

Last I checked, if you want to file suit, you have to acutally file a copyright. Yes, I know you actually hold the rights without having to file if you are the creator, but if you have to actually FILE to instigate litigation, you should HAVE to file a copyright to send a take down notice. They are generally dirt cheap to file (last I checked, something like $20-30 to file), but I bet it would both cut down a little in specious filing of take down notices (in the cases mentioned in the lawsuits here) and it would also cut down on BS claiming of copyright ownership.

It shows bad faith in filing a DMCA take down request if you are citing the wrong copyright, aren't citing a copyright assignment or are citing the wrong copyright and if a human MUST do it, no pretending "oh, it must have been a bug in our code".

The scraper is the **Websites** fault, not the DMCA. Websites like YouTube go against lawyer recommendations (probably from other incentives from media holders) to make DMCA takedowns easy to submit. You are SUPPOSED to make it annoying to submit DMCAs. Physical mail/Long winded emails signed by the owner are the two ways my company accepts them.

Your second paragraph, requiring a file wouldn't do anything but harm the low-income copyright holders as the massive false DMCAs are by big copyright holders they wouldn't give a crap if they have to pay $20 to file a bunch of bullshit.

While that blog post was later restored once Retraction Watch filed a counter-notification, the site claimed that it “expended staff time and resources in corresponding with Automattic about the Takedown Notice and addressing issues that resulted from the Takedown Notice. Retraction Watch also suffered harm in that its reporting on a matter of legitimate and substantial public concern was silenced, albeit temporarily, as a result of the misrepresentations in the Takedown Notice.”

So a Site recieved a notice (internationally) and voluntarily took down the content. Then it put it back up. Why don't people pay mopre attention to this and not take down content until the DMCA Notice has been verified - seems like it would save some grief.

Also of note - the International part - anyone outside of the US is not bound to the DMCA at all. The DMCA is US Law.

Finally - if these people are susceptible to the DMCA and can in fact be held accountable - then it should be viewed as a criminal situation and not a civil one. If someone's breaking the law - you call the cops - let the law enforcement handle it.

Otherwise - it merely sounds like someone's crying foul and not much better than the other trolls going around.

While that blog post was later restored once Retraction Watch filed a counter-notification, the site claimed that it “expended staff time and resources in corresponding with Automattic about the Takedown Notice and addressing issues that resulted from the Takedown Notice. Retraction Watch also suffered harm in that its reporting on a matter of legitimate and substantial public concern was silenced, albeit temporarily, as a result of the misrepresentations in the Takedown Notice.”

So a Site recieved a notice (internationally) and voluntarily took down the content. Then it put it back up. Why don't people pay mopre attention to this and not take down content until the DMCA Notice has been verified - seems like it would save some grief.

As far as I know the DMCA law is written in such a way that to keep their protection they have to immediately take it down and then notify the person who put that content up so they can make a counter claim, the site don't have to verify the validity at all.

While that blog post was later restored once Retraction Watch filed a counter-notification, the site claimed that it “expended staff time and resources in corresponding with Automattic about the Takedown Notice and addressing issues that resulted from the Takedown Notice. Retraction Watch also suffered harm in that its reporting on a matter of legitimate and substantial public concern was silenced, albeit temporarily, as a result of the misrepresentations in the Takedown Notice.”

So a Site recieved a notice (internationally) and voluntarily took down the content. Then it put it back up. Why don't people pay mopre attention to this and not take down content until the DMCA Notice has been verified - seems like it would save some grief.

As far as I know the DMCA law is written in such a way that to keep their protection they have to immediately take it down and then notify the person who put that content up so they can make a counter claim, the site don't have to verify the validity at all.

This is true. We have to take down a DMCA reported content immediately and then we notify the party it is against. If they want to fight it, the content has to stay down until the fight is finished.

Sounds like one of the first reforms that needs to be implemented is to force DMCA takedown requests to be accompanied by a verifiable address of service for the copyright holder (or their representative) within the jurisdiction of the United States.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Yes. Here's why.

I'm friends with several professional artists that have to deal with piracy of their work incessantly. They do not make a ton of money. The DMCA is intended to protect people who don't have funding to take everyone and their uncle to court, or even to send out blanket letters threatening to do so unless a settlement/ransom is paid.

Wow. So DMCA abuse leads to no consequences? Then I guess we should start crowd souring DMCA notices alleging that the websites and any elements of an abuser's online presence violate some intellectual property -we- own.

Though I'm guessing if a big company was throwing weight around YouTube, they'd probably have a hotline for this sort of thing.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

Yes. Here's why.

I'm friends with several professional artists that have to deal with piracy of their work incessantly. They do not make a ton of money. The DMCA is intended to protect people who don't have funding to take everyone and their uncle to court, or even to send out blanket letters threatening to do so unless a settlement/ransom is paid.

A couple folks have made this point. That is why I suggested bonding as a solution to the financing. Spend a few minutes convincing the bondsman that you really have a claim, and you only need to come up with cents on the dollar. The fees are essentially the interest that could have been earned on that money while it's tied up in your complaint (padded a bit for the bondsman's profit).

I have said it before and ill say it again, false DMCA claims can have serious consequences.

ITS PERJURY PEOPLE!!!

Has anyone ever been charged with perjury as a result of DMCA notices?

If so, did any of those cases end in conviction (or plea-bargain)?

I'm not aware of any case where DMCA abuse ended up in court, never mind criminal penalties for the abuser. AFAIK, it's essentially impossible to make use of the perjury provision because you have to have sufficient documentation to prove intent, and unless the person who sent the DMCA notice writes you a letter telling you that they intend to send out a false DMCA notice, there's no way to obtain that documentation. Even worse, large corporations with fully automated DMCA generation procedures are apparently completely immune to all perjury provisions because the automated system has no intentions at all. That fact that nobody even checks to see whether or not the notice is appropriate is apparently irrelevant to having good faith reason to believe that their copyrights are being infringed.

[quote="[url=http://arstechnica.com/civis/viewtopic.php?p=25732143#p25732143]JarrexYou can't just create fines as there will be claims that were made with all good intentions of thinking it was a DMCA violation and it turns out it isn't one. So you'd have to make it so that innocent false positives aren't punished in a way from scaring away the actual positive reports.[/quote]

I'm trying to think of a case where one could have good intentions on filing a DMCA take down request, believing they own the copyright, and not actually.

It's my understanding that you must register a copyright in order to benefit from it (I may be outdated in this belief, admittedly). But if you must register a copyright, then it is rather hard to claim good intent in filing a take down notice when you do not actually hold the copyright. Maybe in the case of massive corporations where the legal team is expected to file the copyrights and a different team files take down requests and there's a miscommunication. But it seems like that would be a bit of a stretch, not to mention a fringe case, to where we cannot put blanket punishments in for false take down filings. The thing is: if it is an honest-to-god mistake on the filer thinking it held the copyright and they did not, there is always the court system to review the case and waive the penalty for the false claim filing.

Really, the tables need to be turned completely: false filers should have to go through the courts to prove their innocence instead of the receivers of take down notices having to go through the courts to prove their innocence. I say make the penalties stiff for false claims and then let the courts deal with the few valid cases that don't need to be punished. If the movie studios or scam India websites that wholesale copy text and file want to go to court for each and every claim they filed and try to prove they were in the right, then let the judges decide how much nonsense they want to put up with on that front and start weeding out their dockets.

Prenda has shown us that there needs to be clear-cut punishment for claims to hold copyrights and not actually holding them. Wait, that was RightHaven. Either way, we have obvious examples of real-world issues that are going on now that need to be stymied immediately. Innocents can always seek legal remedy.

[quote="[url=http://arstechnica.com/civis/viewtopic.php?p=25732143#p25732143]JarrexYou can't just create fines as there will be claims that were made with all good intentions of thinking it was a DMCA violation and it turns out it isn't one. So you'd have to make it so that innocent false positives aren't punished in a way from scaring away the actual positive reports.

I'm trying to think of a case where one could have good intentions on filing a DMCA take down request, believing they own the copyright, and not actually.[/quote]

My impression was that the concern was about proposed fines for filing a DMCA takedown notice in cases where the material was being used under fair use, rather than (only?) in cases where the individual/org. filing the notice didn't have the authority to do so. This might not change one's conclusions, but it does change the calculus somewhat, I think.

Would it be unreasonable to make people put money in escrow to issue a takedown notice?

In general, yes, it would be. As a photographer, for example, I know people have stolen my copyrighted works and used them for their own purpose, whether in a money making venture or not. I cannot afford to file a copyright lawsuit, but because I can't that does NOT invalidate my copyright claim. Requiring someone to post a bond before filing a takedown would be unfair to the LEGITIMATE copyright holder.

Edit: added the word "legitimate"; but then, I guess that's the crux of the issue here, no?